Do you have a name, phrase, or other concept that you want to trademark even though you have not used it in commerce yet? You can file an intent to use trademark application to get the ball rolling on trademark protection for your idea.
What Is the Intent to Use a Trademark?
An intent to use trademark application is an application to receive a trademark for something that is not yet being used in commerce, but there is a good faith intention to use it in commerce soon.
Why File an Intent to Use Trademark Application?
If you have not started using your trademark in commerce yet, you might be wondering why you would want to file an intent to use trademark application rather than just waiting until the trademark is actually being used.
If you have your trademark idea locked in and are anticipating its use, filing an intent to use application can be very helpful to speed up approval for your federal trademark registration.
In addition, filing an intent to use trademark application is very beneficial for securing the legal rights to your trademark so that a competitor cannot establish ownership first. By filing an intent to use trademark application, you reserve an earlier “filing date.”
Your filing date can be important in potential future legal proceedings. The law will classify your first use of the trademark as the date of your application filing date, rather than the date you first actually used it in commerce. First use is always important in determining who has the legal right to a trademark.
Moreover, If you wait until you have been using your trademark in commerce before filing for trademark registration, there is a chance a competitor could start using the mark and gaining association with it.
Why Not File an Intent to Use Trademark Application?
On the flip side, there can be good reasons not to file an intent to use trademark application. The United States Patent and Trademark Office (USPTO) has some strict timeline requirements for intent to use trademark applications.
After your intent to use trademark application has been approved, you must use the trademark in commerce within six months of that approval date. You can seek extensions up to five six-month extensions by filing a request for extension and paying the appropriate fees.
This means that if you don’t plan on using the trademark with goods and services any time soon, you’ll want to wait on submitting an intent to use trademark application.
Also, if you don’t have a plan of when you will be using the trademark in commerce, you will want to establish this first. This is because you must identify the date of your first use in your intent to use trademark application.
Intent to Use Application
An Intent to Use Application, or ITU application, is submitted in a similar manner as regular trademark registration. This means you will submit the ITU application through the USPTO’s Trademark Electronic Application System (TEAS). There are different types of registrations that can be submitted to the TEAS: TEAS Regular and TEAS Plus.
The TEAS Regular application allows you to use a custom description of your goods or services in the application. The TEAS Plus application, on the other hand, requires you to pick the type of goods or service your trademark falls into from a specific, preset list of choices. These choices are listed out in the Trademark ID Manual.
In your ITU application, you will need to designate the filing basis as 1(b) under the Lanham Act. Specifically, 15.U.S.C. § 1051(b) requires that you have a “bona fide intention, under circumstances showing the good faith [by you], to use a trademark in commerce may request registration of its trademark. This designates the application as an ITU application.
As noted above, you will need to establish when you believe the date of first use will be. You will also need to submit a verified statement that you have a good-faith intention to use the trademark in commerce, which is explained more fully below.
What Is Use in Commerce?
Use in commerce means that you are using the trademark in connection with selling some type of goods or services. Specifically, there are two requirements for use in commerce of goods:
- The trademark is placed on the goods, packaging for the goods, or point-of-sale displays associated with the goods (including webpage displays), and
- The goods are actually being sold or transported in commerce.
Similarly, there are two requirements for use in commerce of services:
- The trademark is used in the sale, advertising, or rendering of the services, and
- The services are actually being rendered in commerce.
What Is Good Faith Intent to Use in Commerce?
To demonstrate good faith use in commerce in your application, you must submit a sworn statement with your application. This verified statement must state that you have a bona fide intention to use the trademark in commerce.
This sworn statement will typically only be questioned if someone takes legal action trying to present your mark from getting registered.
To demonstrate this bona fide intention, it can be helpful to document your efforts of using the trademark. This includes collecting evidence that you have completed research and/or development related to the goods or services underlying your trademark, or that you have sought approvals for your product or services, etc.
All of this can be helpful in any potential future legal proceedings.
Notice of Allowance From the USPTO
If the USPTO approves your intent to use the application, it will issue a Notice of Allowance. A Notice of Allowance is a written notification from the USPTO that the trademark is allowed, but is not yet registered.
Once you have received a Notice of Allowance, this is what starts the six-month clock to use the trademark in commerce and to submit the required paperwork with the USPTO.
How to Claim Use in Commerce
Following the Notice of Allowance, you can claim use in commerce of your trademark by filing one of two things:
- An Amendment to Allege Use; or
- A Statement of Use.
These are two different forms that can be filed with the USPTO. These forms may be rejected by the USPTO if you do not provide all required information and requested documentation, if you change the name of the owner of the trademark, or if you do not submit acceptable dates of first use or specimens.
The USPTO defines specimen as:
a sample of your trademark as used in commerce. It is real-life evidence of how you are actually using your trademark in the marketplace with the goods or services in your application or registration maintenance filing. It’s what consumers see when they are considering whether to purchase the goods or services you provide in connection with your trademark.
What if the Trademark Is Not Used Within Six Months?
If you do not use your trademark in commerce within six months of obtaining your trademark approval from the USPTO, there is still an option to maintain your trademark rights. You can file an extension request with the USPTO and pay the associated fees.
The extension request needs to be filed within six months of the date the USPTO issued its Notice of Allowance. The extension request will cover another six month period. After that, you must continue to timely file extension requests to cover the next six month period, for a maximum of five (5) extension periods.
